What are the key nuances for international rights holders to be aware of before registering trademarks in Uganda and/or the ARIPO region?
Trademark clearance is a key issue that brand owners should take seriously. A well-conducted registry search should reveal potential bottlenecks in the relevant market, which can then be dealt with before the mark is filed. It is also important to conduct domain searches, as well as searches in the relevant business registry to rule out similar business names. Lastly, subject to costs, an applicant would be wise to search the register of sector authorities, such as national drug authorities. This is critical because in most African jurisdictions, the protection of some brand names is not uniformly shared between IP and business registries or other regulatory bodies.
How do you convince risk-averse clients that the up-front costs of IP protection are worth it in the long run?
Africa offers tremendous opportunities for owners of global brands. Now is the time to protect intellectual property on the continent in order to prevent trademark squatters, as the African Development Bank projects growth of 3.4% for 2021. More importantly, the World Economic Forum has indicated that there will be significant growth for businesses due to the African Continental Free Trade Area. This new trade pact will bring together 55 countries with a combined GDP of $3.4 trillion. Eliminating 90% tariffs will boost trade in goods and services. This will all have a positive effect on the value of IP assets invested on the African continent in the medium to long term, especially due to the continent’s young and emerging middle class.
What are the biggest challenges facing clients looking to enforce their brands in multiple jurisdictions?
The biggest challenge affecting the enforcement of IP rights in Africa is the of lack of common rules. Within the Africa Regional Intellectual Property Organisation (ARIPO) area, there is hope that reforms under the new director general will lead to the harmonisation of enforcement regimes within the Banjul and Harare Protocol member states. One of the approaches that can yield positive results is the use of the dispute settlement mechanisms provided for under the existing trade and customs areas. For instance, the East African Community, the Common Market for Eastern and Southern Africa, and the Southern African Development Community all have dispute settlement mechanisms that can, with some modifications, be used to settle IP disputes in a quick and efficient way.
What is the best career advice you have ever received?
The advice in the late 1990s to invest my time in learning about laws that affect adoption of technology has, in my view, been the most valuable. That interest later led me to advise the Uganda National Council for Science and Technology over many years on an ad hoc basis and later sparked an interest in IP law. It has also seen me engage in research, consulting and the teaching of IP law, which have all had a significant impact on my practice.
What do you think lies ahead for the ARIPO trademark regime under the office’s new director general?
The ARIPO trademark regime is relatively advanced, compared to the systems in many of its member states. Nevertheless, the new director general will need to continue popularising the online filing platform that was introduced a few years ago.
More importantly, the director general needs to engage member states to adopt a common dispute settlement mechanism. This could borrow from some progressive aspects of the WIPO domain dispute settlement system. Moving dispute settlement online will save resources and hopefully help deliver justice for parties faster. Second, the fact that younger professionals are joining the practice of intellectual property within member states means that an electronic dispute settlement mechanism may get faster uptake and have more impact than traditional court mechanisms.
Lastly, African brands are ripe for commercialisation on a wider scale. All over the continent, innovative solutions are cropping up and the franchising mode may need to be adopted in order to optimise opportunity. Beyond registration and brand administration, ARIPO will need to look years ahead to unlock and unleash the potential of young successful entrepreneurs on the African continent by facilitating the licensing of trademarks. This commoditisation of trademarks will create a market for IP assets in successful companies, which can be valued and used as security for desperately needed capital.
Paul Asiimwe is the founder and managing partner of SIPI Law Associates. He graduated with an LLB from Makerere University in Kampala, Uganda in 1997 and an LLM in international economic law from Warwick University in Coventry, United Kingdom in 2003. He leads a team of four lawyers in a boutique IP practice that advises on all IP transactions from application to enforcement. His areas of expertise include trademark searches and filings, trademark oppositions and cancellations.